Saturday, January 09, 2016

Was Teva v. Sandoz the #7 patent story of 2015?

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and applicants.

Number seven on the list was the Supreme Court decision in Teva v. Sandoz, which concerned a Teva patent related to its multiple sclerosis drug Copaxone. Patent Docs began:

In January, the Supreme Court held in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. that an "appellate court must apply a 'clear error,' not de novo, standard of review" to the evidentiary underpinnings of a district court's claim construction determination. Unlike some of the Court's recent patent decisions, Teva was not decided by a 9-0 vote, with the majority constituting only seven Justices. The Teva majority had determined that claim construction was ultimately a question of law but one that could depend on "subsidiary" fact-finding by the district court. According to Justice Breyer's majority opinion, Federal Rule of Civil Procedure 52(a)(6) mandates that an appellate court give substantial deference to district court fact finding and to contravene the lower court's factual determinations only if there was "clear error."

Patent practitioners take notice when the Supreme Court decides a patent case, but not all Supreme Court cases in patent law have great impact on patent practitioners. IPBiz loves the Supreme Court case Nelson v. Adams, but it likely did not have a big impact on patent practitioners.

Separately, of dissents by Judge Newman later vindicated by the Supreme Court, LBE's favorite is Nelson v. Adams, with its footnote to Alice in Wonderland:

The path of this case reminds me a bit of Nelson v. Adams. Therein, the defendant lost at the CAFC, in spite of some severe due process issues. Judge Newman strenuously dissented. The Supreme Court took the case, and voted 9-0 Judge Newman's way, with an interesting footnote about "Alice in Wonderland."

From an article by LBE at IPFrontline [ Inadvertent Argument Against Peer-to-Patent ]:

Painting something with the “Alice in Wonderland” brush is great sport. The association was used in Nelson v. Adams, 529 U.S. 460, 468 (2000): “Procedure of this style has been questioned even in systems, real and imaginary, less concerned than ours with the right to due process.”

Teva v. Sandoz is not going to have a big impact, and any traps therefrom are easily foreseeable.

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I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.